EXHIBIT 10.37
LICENSE AGREEMENT
THIS AGREEMENT, effective November 26, 1997, is made by and between
Xxxxxx Industries, Inc. a Florida corporation with a place of business at 0000
Xxxxxxxxx 00xx Xxxxxx, Xxxxx 000, Xxxxx, Xxxxxxx 00000 ("Licensor") and Capital
Factors, Inc., a Florida corporation having a place of business at 000 Xxxx
Xxxxxxxx Xxxx Road, 5th Floor, Xxxx Xxxxx, Xxxxxxx, 00000 ("Licensee").
WITNESSETH:
WHEREAS Licensor and Licensee have entered into a Factoring Agreement
and Security Agreement Supplement - Inventory (as such documents may be
modified, extended or amended from time to time) in connection with Licensor's
manufacturing, marketing and selling of a line of self contained industrial
parts washers that incorporate recycling and waste minimization technologies,
tools, materials, parts and other instrumentalities, insofar as such machines,
tools, parts, materials and other instrumentalities are involved in or
incidental to the development, manufacturing, testing or repair of the self
contained industrial parts washer ("Licensed Products");
WHEREAS The Licensed Products are covered by and the subject of certain
inventions, developments and works of Licensor, whether or not covered by
patent, trademark, copyright, technology/knowhow and/or trade secret, and any
such patents, trademarks (whether or not
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registered), copyright (whether or not registered), and applications therefor,
including but not limited to those listed on Schedule "A" hereto (Intellectual
Property); and
WHEREAS pursuant to the Factoring Agreement and Security Agreement
Supplement - Inventory between Licensor and Licensee, the parties hereto desire
that Licensee shall have a security interest in the Licensed Products, and that
Licensee shall have a full and all encompassing right and license to dispose of
Licensed Products upon the exercise of its security interest in the Licensed
Products.
NOW, THEREFORE, the parties hereto hereby agree as follows:
1.0 GRANT OF LICENSES
1.01 GRANT. Licensor hereby grants to Licensee, subject to the provisions hereof
and the Factoring Agreement, a non-exclusive, royalty free, irrevocable license
under the Intellectual Property to make, have made, use, sell, reproduce,
prepare of produce modifications or derivative works, distribute, display and/or
otherwise dispose of the Licensed Products, including the ability to lease,
license and transfer the Licensed Products which are or have been made by or for
the Licensor. Notwithstanding the foregoing, Licensee shall not make, have made,
use, sell, reproduce, prepare or produce modifications or derivative works,
distribute, display and/or otherwise dispose of Licensed Products, including the
ability to lease, license and transfer the Licensed Products until such a time
as Licensor shall have defaulted under the Factoring
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Agreement, which default shall continue for a period of thirty (30) days after
Licensor's receipt of notice of such default.
1.02 SUB LICENSE RIGHT. The licenses granted herein include the ability to
convey to any recipient of Licensed Products, directly or indirectly form
Licensee, a license of the scope of the licenses granted to Licensee by Licensor
herein. Further, the grant of each license hereunder includes the right to grant
sublicenses within the scope of such license to Licensee's related companies for
so long as they remain its related companies. Any such sublicense may be made
effective retroactively, but not prior to the effective date hereof, nor prior
to the sublicensee becoming a related company of Licensee.
1.03 ABILITY TO PROVIDE LICENSES
(a) Licensor warrants that, upon execution hereof by it and as of
the effective date hereof, there are not commitments or restrictions which limit
the licenses and rights which are purported to be granted hereunder by Licensor.
(b) Licensor intends to acquire the right to grant to the Licensee
licenses under any Intellectual Property covering the Licensed Products made by
the Licensor and its related companies' employees with use of its or its related
companies' funds or other assets. Accordingly, Licensor hereby agrees to take
steps which are reasonable under the circumstances so that Intellectual Property
covering Licensed Products which are made solely by one or more
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of its and/or its related companies' employees who are employed to do research,
development and/or inventive work and for which substantially all the funding is
provided by it and/or its related companies, are included among the Intellectual
Property licensed by it hereunder.
2.0 TERM AND TERMINATION
2.01 The term of this Agreement shall be for a period commencing on the
effective date hereof and shall terminate upon the earlier to occur of (i) the
date on which amounts are due by Licensor to Licensee under the Factoring
Agreement following the termination thereof, or (ii) the life of the
Intellectual Property.
2.02 EFFECT OF BREACH. In the event of a breach of this Agreement by
Licensor, Licensee may, in addition to any other remedies that it may have,
terminate this Agreement by not less than twenty (20) days' prior to written
notice to Licensor specifying such breaches, unless such breaches specified
therein shall have been remedied within twenty (20) days following Licensor's
notice of such breach, and except that in the event of termination, the rights
and licenses granted herein shall survive as necessary to exhaust inventory of
Licensed Products to which Licensee may have obtained rights to, including title
rights, both legal and/or equitable. A breach under this Agreement shall be
considered to be a breach under the Factoring Agreement and the Security
Agreement Supplement, and shall give rise to termination of those agreements
under the provisions set forth in those agreements between the parties. In the
event Licensee breaches this
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Agreement, Licensor may, in addition to other remedies, terminate this Agreement
by not less than twenty (20) days writtennotice to Licensee, unless such
breaches specified therein shall have been remedied within twenty (20) days
following Licensee's notice of such breach.
3.0 MISCELLANEOUS PROVISIONS
3.01 REPRESENTATIONS AND WARRANTIES. Licensor hereby represents and
warrants that it has all necessary rights and authority to grant the licenses
described herein, and, to the best of Licensor's knowledge, that the Licensed
Products do not infringe the Intellectual Property rights (including but not
limited to patents, trademarks, copyright, and other similar rights) of third
parties.
3.02 INDEMNIFICATION. Licensor will indemnify and defend the Licensee,
its related companies and its sublicensees, at its expense, and pay all finally
ordered costs, fines, attorney's fees, including paralegal's fees, through final
appeals, and damages resulting from all proceedings or claims against Licensee
its related companies, and its sublicensees who obtain the Licensed Products,
for infringement by any Licensed Product, or as a result of any use therof, of
patents (including utility models and registered designs), copyrights,
trademarks or other similar Intellectual Property rights (including rights in
trade secrets), now or hereafter existing in the United States or any other
country in the world. Licensor shall immediately notify Licensee if Licensor is
or becomes aware of any right of, or protection accorded to a third party as set
forth
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above, that might affect Licensor's ability to provide the licenses, including
the right to exercise the licenses, under this Agreement.
3.03 INCORPORATION. This Agreement is incorporated by reference into
and made a part of the Factoring Agreement and Security Agreement
Supplement-Inventory between Licensor and Licensee, and is an attachment
thereto.
3.04 DISCLAIMER. Neither party makes any representations, extends any
warranties of any kind, assumes any responsibility of obligations whatever, or
confers any right by implication, estoppel or otherwise, other than the rights
and warranties herein expressly granted.
3.05 ASSIGNABILITY. Licensee shall have the right to assign this
Agreement to such parties as Licensee may assign or have assigned its rights in
inventory of Licensed Products optained under the provisions of the Factoring
Agreement and Security Supplement-Inventory, without the Licensor's express
written consent. Licensee shall not have the right to otherwise assign this
Agreement without the Licensor's express written consent. Licensee shall not
have the right to otherwise assign this Agreement without the Licensor's express
written consent. Further, Licensor may not assign this Agreement or the certain
Factoring Agreement and Security Agreement Supplement-Inventory into which this
Agreement is expressly incorporated by reference and made a part thereof,
without Licensee's express written consent.
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3.06 ADDRESSES. Any notice or other communication hereunder shall be
sufficiently given if sent by certified mail addressed to:
in the case of Licensor;
Xxxx Xxxxxx
Chief Executive Officer
Xxxxxx Industries, Inc.
0000 Xxxxxxxxx 00xx Xxxxxx, Xxxxx 000
Xxxxx, Xxxxxxx 00000
and in the case of Licensee;
Xxxxx X. XxxXxxxxx
Senior Vice President
Capital Factors, Inc.
000 Xxxx Xxxxxxxx Xxxx Road, 5th Floor
Xxxx Xxxxx, XX 00000
3.07 CHOICE OF LAW. The parties are familiar with the principles of
Florida commerical law, and desire and agree that the law of Florida shall apply
in any dispute arising with respect to this Agreement.
3.08 INTEGRATION. This Agreement sets forth the entire agreement and
understanding between the parties as to the subject mattter hereof and merges
all prior discussions between them.
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Neither of the parties shall be bound by any warranties, understandings or
representations with respect to such subject matter other than as expressly
provided herein or any writing signed with or subject to execution hereof by an
authorized representative of the parties to be bound thereby.
3.09 COUNTERPARTS. This Agreement may be executed in two or more
counterparts, each of which shall be deemed an original but all of which shall
constitute one agreement.
3.10 WAIVER OF JURY TRIAL. Trial by jury is hereby waived by the
parties hereto in any action, proceeding or counterclaim brought by either party
against the other party on any matters arising out of or in any way connected
with this Agreement, or the relations created hereby, whether for contract, tort
or otherwise, and both parties hereby consent to the jurisdiction of the Courts
of the State of Florida and of any Federal Court in such state for determination
of any dispute as to any such matters.
3.11 SEVERABILITY. If any provision of this Agreement is held by a
court of competent jurisdiction to by contrary to law and invalid, the remaining
provisions of this Agreement shall be considered to be severable and shall
remain in full force and effect.
3.12 BINDING EFFECT. This Agreement shall be binding upon the parties
hereto, their heirs, legal representatives, successors and assigns.
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IN WITNESS WHEREOF, each of the parties has caused this Agreement to be
executed in duplicate originals by its duly authorized representatives on the
respective dates entered below.
LICENSOR
/S/ XXXXXXX XXXXX
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Xxxxxxx Xxxxx
Title: Chief Financial Officer
Date: November 26, 1997
LICENSEE
/S/ XXXXX XXXXXXXXX
-------------------------------
Xxxxx XxxXxxxxx
Title: Senior Vice President
Date: December 1, 1997
THIS AGREEMENT DOES NOT BIND OR OBLIGATE EITHER PARTY IN ANY MANNER UNLESS DULY
EXECUTED BY AUTHORIZED REPRESENTATIVES OF BOTH PARTIES.
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SCHEDULE "A"
LIST OF INTELLECTUAL PROPERTIES BY CATEGORY
SystemOne/registered trademark/ Washer
Power Spray Washer
Immersion Washer
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